District Court Rules Plaintiff Need Not Come Forward with Evidence of Priority Date Earlier than Patent Application Until Defendant Produces Clear and Convincing Evidence of Invalidating Prior Art and Summary Chart Is Not Sufficient

Omega Patents, LLC (“Omega”) filed a patent infringement action against CalAmp Corp. (“CalAmp”) asserting that CalAmp infringes the claims of U.S. Patent No. 6,346,876 (“the ‘876 Patent”), U.S. Patent No. 6,737,989 (“the ‘989 Patent”), U.S. Patent No. 6,756,885 (“the ‘885 Patent”), U.S. Patent No. 7,671,727 (“the ‘727 Patent”), and U.S. Patent No. 8,032,278 (“the ‘278 Patent”). The patents relate to control systems for vehicles with a “data communications bus.” Omega asserted that CalAmp’s devices are used to monitor particular vehicle characteristics and conditions and report vehicle information to an end user, thus infringing on the patents-in-suit. In particular, CalAmp advertises for sale the LMU-3000, LMU-3030, and LMU-3050 (the “Accused Devices”) which are described as full-featured tracking systems which “access vehicle diagnostic interface data, track vehicle speed and location, plus detect hard braking, cornering, or acceleration.”
CalAmp filed a motion seeking to determine the issue of whether the patents-in-suit, excluding the ‘989 Patent, are entitled to any priority date earlier than the date the patents-in-suit were actually filed. In response, Omega asserted that it is under no obligation to establish priority until CalAmp first sets forth a prima facie case of invalidity as to a specific claim or patent and carries its burden of persuasion that the relevant prior art reference is dated after the earlier priority date (the ‘551 Patent) but before the filing date of the patent(s) at issue. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008).

The district court began its analysis by explaining that CalAmp “has the burden of proving by clear and convincing evidence that the patents-in-suit, otherwise presumed valid, are invalid. It is not until these burdens of persuasion have been met that Omega embraces the burden of proving that the patents-in-suit enjoy a priority date preceding the relevant prior art.”

To argue it had met this burden, CalAmp presented argument including citations to the parent patent (the ‘551 Patent) and to various alleged admissions made by Omega’s expert witness and attorneys in prior litigation. As explained by the district court, Omega contended that the submission of a chart containing prior art references that allegedly establish invalidity is inadequate to shift the burden of persuasion to Omega to demonstrate that the patents-in-suit are entitled to a priority date preceding the date the patent was filed. “That is, Omega submits that mere references to prior art is insufficient to establish that the prior art in fact invalidate the patents-in-suit, which is a precondition to shifting the burden of persuasion back to Omega.”

The district court agreed with Omega that the request was premature. “Assuming Omega establishes infringement of some or all of the patents-in-suit, and further assuming CalAmp proves by clear and convincing evidence that prior art invalidates some or all of the patents-in-suit, then and only then does Omega have a burden of establishing that the continuations-in-part relate back to the parent patent.”

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com.

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com.

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com.

Andrew Shadoff, is a litigation associate who has assisted in prosecuting and defending patent infringement lawsuits involving mechanical devices. He has drafted successful summary judgment motions and pretrial motions in limine, and has assisted with trial and witness preparation. Contact him at 310.712.6856 or AShadoff@jmbm.com.

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.

Rachel Capoccia

Rachel Capoccia focuses on technology-based litigation and counseling, with an emphasis on patent litigation, copyright litigation and other technology-related matters. Her legal experience is complemented by 10 years working at IBM as a software engineer before law school, during which she led a team of engineers who developed computer graphics software and computer aided design systems. She represents clients in all phases of patent infringement matters involving diverse areas of technology. Contact Rachel at 310.201.3521 or RCapoccia@jmbm.com.

Jessica Newman is a litigation associate, and a member of JMBM's Patent Litigation Group. She is involved in all aspects of litigation and has assisted in representing clients in a variety of industries with regards to patent infringement and copyright infringement issues. Contact her at 310.785.5372 or JNewman@jmbm.com.